Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s claims filed June 24,2026. Claims 1-5,7 and 9-18 are pending. Claims 1-5,7 and 9-11 have been amended. Claims 6 and 8 have been cancelled. Claims 12-18 are new.
The objection to the specification is maintained for the reasons set forth below.
All other rejections are withdrawn in view of applicant’s amendments to the claims.
Specification
The specification is objected to because it does not include a section containing a brief description of the drawings. The drawings are only referred to in the examples. See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 14-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims recite “also obtained through polycondensation” which is unclear as this could be interpreted as an alternate method of polycondensation with a different set of components instead of polycondensation with the prior components and the “also components” as additional compounds in the polycondensation. For example in claim 3, the “also” could indicate a polycondensation with urea but isn’t clear that the formaldehyde and at least one bisphenol monomer of claim 1 from which claim 3 depends are present. Applicant should make clear that the polycondensation of claim 1 further comprises urea as an additional component and does not present a completely alternative method of polycondensation with urea only. Claim 15 is also rejected for being dependent upon claim 14 and inheriting the same deficiency.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Cummings (WO 98/51248).
Cummings teaches inclusion complexes comprising beta-cyclodexrin and encapsulated compounds (page 21, next to last paragraph) wherein the encapsulates contain shells of urea formaldehyde polycondensation products (page 22, paragraph 4).
Cummings doesn’t teach the inclusion complexes in a single embodiment but selecting from the teachings of Cummings allows one of ordinary skill in the art to arrive at the claimed invention.
It would have been obvious to tone of ordinary skill in the art at the time the invention was made to select beta-cyclodextrin inclusion complexes with urea formaldehyde polycondensation products as Cummings teaches these compounds when combined together can make inclusion complexes of a desirable particle size. While Cummings doesn’t teach the inclusion complexes as tanning or retanning agents, they are identical in composition and are capable of that utility. Even though Cummings does not teach a tanning or retanning agent use of his composition, the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Tanning and retanning agent is simply intended use limitations.
Response to Arguments
Applicant’s arguments with respect to claim 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Claim 9 no longer requires the use of sulphonated hydrocarbon, therefore is broader than previously claimed. New reference to Cummings is sufficient to reject the broader claim.
Allowable Subject Matter
Claims 1,2,4,5,7,10 and 11 are allowed. Upon correction of the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, rejections, claims 3,12,13,16,17 and 18 will be allowable. Claims 14 and 15 will be allowable after correction of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, issues and when they are rewritten in independent form. The claims are allowed over the closest prior art of record, DE 10101294A1, which teaches compositions comprising cyclodextrin and a phenolsulfonic acid-formaldehyde and/or a naphthalene sulfonic acid formaldehyde condensate forming a small amount of inclusion complex but does not teach or fairly suggest inclusion complexes comprising the sulfonated or sulfited bisphenol monomers, sulfited aromatic hydrocarbon monomers, and polycondensates containing urea.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
